Significant 2007 case law on the Community trade mark from the ECJ and the CFI

Legal context: This article looks at the important decisions of 2007 on theCommunity trade mark made by the Luxembourg courts. Key points: The cases discussed concern the application of Council Regulation(EC) No. 40/94 of 20 December 1993 on the Community trade mark(the ‘CTMR’), Commission Regulation (EC) No. 2868/95of 13 December 1995 implementing the CTMR (the ‘CTMIR’),and the Council Directive 89/104/EEC of 21 December 1988 (‘Directive89/104’). Practical significance: The purpose of this article is to give a quick overview of themost significant trade mark cases decided in 2007 by the Luxembourgcourts. The article has a practical bias and is aimed at readerswho wish to find quickly the key decisions of 2007.     

Common sense prevails in trade mark transfer dispute

The High Court of Justice has interpreted Article 17(2) of theCommunity Trade Mark Regulation, which provides that ‘[a]transfer of the whole of the undertaking shall include the transferof the Community trade mark’, in a commonsense mannerthat provides that the Community trade mark shall follow thetransferred business. The Court gave great weight to facts andcircumstances of the relevant transactions in giving effectto the transfer of the trade mark rights.     

Trade mark damages for infringement in multiple jurisdictions: a German court rules

A recent decision of the Higher Regional Court of Hamburg inGermany provides useful guidance as to which law applies whentrade mark infringements are committed in several EU memberstates; the Court found an effective and workable solution thatenhances Community Trade Mark Regulation enforcement and strengthensits unitary character throughout the Community.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

Registration of terms borrowed from another language

In answer to a question referred by a Spanish Court in a disputeas to the validity of the Spanish trade mark MATRATZEN, theEuropean Court of Justice (ECJ) has ruled that trade mark ownersare not precluded by Article 3(1)(b) or (c) of the Trade MarksDirective (Council Directive 89/104) from registering in oneMember State a term borrowed from another language, unless itcan be demonstrated that relevant public in the Member Statein which registration is sought are capable of identifying themeaning of the term.     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Deceit and immorality in trade mark matters: does it pay to be bad?

LEGAL CONTEXT: This paper reviews some of the recent leading decisions of theOHIM's Boards of Appeal, interpreting Article 7(1) (f)–(k)of Council Regulation (EC) No. 40/94 of 20 December 1993 onthe Community trade mark (CTMR). KEY POINTS: Issues of public morality are considered in Grand Board's decisionin ‘Screw You’ and trade marks that deceive thepublic as to the nature, quality, or geographic origin of thegoods and services they cover are looked at in the ‘WineOh!’ case. The application of the public interest conceptunderlying heraldic signs, emblems, and geographical indicationsappearing on alcoholic beverages is also reviewed. PRACTICAL SIGNIFICANCE: The attempt to draw together some common threads of the decisionsin this area is designed to help practitioners understand whythe Boards of Appeal have reacted in a certain way to a particularsituation and where the limits currently lie.     

Licences in OHIM practice

Legal context: Despite the commercial importance of licences, the Regulation40/94 contains relatively few provisions on licences. As faras these refer to licences granted to CTMs or their recordalat OHIM, they are beyond the scope of the article, which dealswith the case law emanating from OHIM in inter partes proceedings,where licences have played a role. Key points: This article considers the legal requirements licensees mustmeet when filing opposition and cancellation proceedings beforeOHIM. It reviews when use under licence is regarded as genuineuse, or valid for the purpose of establishing acquired distinctivenessor reputation. It also deals with OHIM decisions regarding licenseesfiling the licensors' trade marks in their own names. Practical significance: With respect to the standing of licensees as opponents or applicantsfor invalidity, this article explains the procedural requirements,mentioning also points to be considered when drafting trademark licences. The article also explains to what extent a licenceneed be proven where the opponent or cancellation applicanthas not used the earlier mark himself but wishes to rely onuse made by someone else. On the issue of a licensee filingthe licensed mark in his own name, the article gives an introductionto the criteria applied by OHIM and deals with his fiduciaryposition, resulting in a greater likelihood of his having actedin bad faith.     

Valued varieties

European Community Plant Variety Protection By Gert Würtenberger,Paul van der Kooij Bart Kiewiet and Martin Ekvad, 2006, Oxford:Oxford University Press Price: £95, Hardback, ISBN: 0-19-928616-7.pages 311

This book provides an up-to-date overview and commentary abouta truly EU community IP system: The European Community VarietyProtection Right system (CPVR, based on Council Regulation 2100/94). Plant variety protection (PVP) was formerly considered a rather‘exotic’ field of IP law, used only by     

Keywords,case law and the Court of Justice: the need for legislative intervention in modernising European trade mark law

Recent preliminary references to the CJEU on online keyword advertising and registered trade mark infringement have exposed the challenges facing EU registered trade mark law in its response to new technologies. These cases and the challenges they pose provide a timely prism through which to examine the European trade mark law-making process and the role of the CJEU within that process. This article will employ an analysis of the way in which the CJEU has developed certain key new aspects of the law on ‘infringing use’ to explore concerns over the CJEU's role and approach. It will be argued that, driven by policy considerations, the CJEU has acted creatively to develop the law of infringement in ways that cannot be sustained by the TMD and CTMR and which are likely to cause increasing uncertainties going forward. With the European Commission currently considering reform of Trade Marks Directive 2008/95/EC and Community Trade Mark Regulation 207/2009/EC, this paper will argue that there is a need for more comprehensive and forward-looking legislative intervention than has yet been proposed and that such intervention will be essential to restoring balance in the European trade mark law-making process.     

Bitter pill for the pharmaceutical industry

In Case C-431/04 of 4 May 2006 the European Court of Justiceruled that a combination of an active ingredient and an excipientcannot be understood as ‘combination of active substances’in the sense of Article 1(b) of Council Regulation 1768/92 andthus is not entitled to SPC protection.     

Proof of use, continuity of functions in inter partes proceedings, and three-dimensional marks: Europe in review

Legal context: This article reviews the recent CFI and ECJ case law on proofof use and continuity of functions in the context of oppositionproceedings as well as the strict approach to three-dimensionalmarks. Key points: Unlike the situation in many common law jurisdictions, the Communitytrade mark regime is not a use-based system. Nevertheless, oncea mark has been registered for more than five years, the rightsthat it seeks to protect may only be enforceable to the extentthat the sign has been used for the goods and services it covers.In the context of opposition proceedings, applicants may callfor evidence that the opponent has actually used the mark onwhich the opposition is based. The concept of ‘genuineuse’ - which must be demonstrated in order to show thata mark has actually been used - has come before the Court ofJustice for further clarification. Where proof of use is adducedfor the first time before the Board of Appeal, the Court ofFirst Instance believes that, because of the principle of thecontinuity of functions, it is not out of time. That analysishas not been supported by the recent opinion of Advocate GeneralSharpston in the Arcol case and there is now considerable uncertaintypending a final pronouncement on the issue by the Court of Justice.In the meantime, the case law from Luxembourg continues to insiston three dimensional marks being like any other type of mark,whilst taking a very strict approach to the registrability ofsuch signs. Practical significance: The evidence of use to be adduced need not be quantatively significantand the ‘hurdle to be jumped’ is somewhat ‘lower’than was previously the case. Whether negligent representativesmay continue to use the continuity of functions principle tojustify recouping missed deadlines on appeal (particularly,when presenting proof of use), remains to be seen. However,what is certain is that three-dimensional marks will continueto be difficult to register.     

Questions referred to the ECJ regarding scope of protection against allusive packaging and use of registered marks on comparison lists

The Court of Appeal is referring a number of questions to theECJ, including questions concerning the scope of protectionfor registered trade marks and the meaning of ‘unfairadvantage’ for the purposes of the Trade Marks Directiveand the Comparative Advertising Directive.     

A very short guide to an awful lot

Harmonised Trade Mark Law in Europe By Ulrich Hildebrandt 2005,Cologne: Carl Heymanns Verlag Price: 48, Hardback, ISBN: 3-452-25922-6. pp.150   Dr Ulrich Hildebrandt, a lawyer in private practice in Berlinand a lecturer at the Heinrich-Heine-University in Düsseldorf,has had an interesting and useful idea. In this book he hasproduced a compilation of the case law of the European Courtof Justice interpreting the Council Directive 89/104 to approximatethe laws of the Member States relating to trade marks (includingdecisions     

Inter Partes Proceedings and the Reform of the Community Trade Mark Implementing Regulation

Legal and practical context. Commission Regulation 1041/2005of 29 June 2005, which amends the Community Trade Mark ImplementingRegulation, entered into force on 25 July 2005. Substantialamendments are brought to inter partes proceedings, that isoppositions and applications in revocation or in invalidity,and appeal procedures. Key points. The rules governing the substantiation of the earlierrights and time limits are now stricter. Also, the new regimeaims at circumscribing the consequences of the rather broadinterpretation which the Court of First Instance gave over thelast two years to the notion of functional continuity betweenthe opposition division and the Boards of Appeal. Practical significance. The authors analyse the new provisionscontained in the Community Trade Mark Implementing Regulationin the light of the latest case law of the Court of First Instance,in order to provide practitioners with a simplified guide.     

Originality in software law: Belgian doctrine and jurisprudence remain divided

Legal context: Article 1.3 of the Software Directive stipulates that ‘acomputer program shall be protected if it is original in thesense that it is the author's own intellectual creation’.The same condition is formulated in Article 2, part 1 of theBelgian Software Act. Key points: Belgian doctrine and jurisprudence remain divided regardingthe question whether the romantic (continental European) originalitycriterion applies so that a computer program should bear thepersonal mark of the author, or whether a lower (Anglo-Saxon)threshold level is applicable. This threshold means that a computerprogram is already protected the moment it is not a copy ofanother program. The rulings of the Ghent Court of Appeal of13 April 2006 and the Antwerp Court of Appeal of 19 December2005 reflect this division. Practical significance: There can be no doubt that legal security is under serious threat,both from the developers of software and from potential infringers.The time is right to put a preliminary question to the EuropeanCourt of Justice on this matter.     

Shifting Conceptions of Sexual Discrimination at the Court of Justice: from P v S to Grant v SWT

Decisions of the Court of Justice have challenged traditional notions of sexual discrimination. In P v S and Cornwall County Council, the Court held that discrimination against transsexuals was contrary to the 1976 Equal Treatment Directive. However, in Grant v South‐West Trains, the Court rejected arguments that Article 119 on equal pay prohibited discrimination on the basis of sexual orientation. This article contrasts the two decisions, and in particular focuses on the inconsistencies in the Court's definition of what constitutes sexual discrimination. The article further considers the underlying factors which may have influenced the Court's judgment, including the moral dimension and the political context of the two decisions. Finally, there is a discussion of the merits of equality litigation strategies, in particular at the Court of Justice.     

Toward a General Margin of Appreciation Doctrine in International Law?

Three recent International Court of Justice decisions –Oil Platforms, Avena and Wall in the Occupied Palestinian Territory– highlight the uncertain status of the margin of appreciationdoctrine in the Court’s jurisprudence. The purpose ofthis article is to evaluate, in the light of contemporary practiceof other courts, the current status under international lawof the margin of appreciation doctrine, which encourages internationalcourts to exercise restraint and flexibility when reviewingthe decisions of national authorities, and to offer preliminaryguidelines for future application. The article also discussesa variety of policy arguments concerning the legitimacy andeffectiveness of international courts, which can be raised insupport of the development of a general margin of appreciationdoctrine with relation to some categories of international lawnorms governing state conduct, and it examines potential criticism.Eventually, it argues that the same considerations which haveled to the creation of ‘margin of appreciation type’doctrines in the domestic law of many states and in the contextof specific international regimes (for instance, the EuropeanConvention on Human Rights) also support the introduction ofthe doctrine into general international law. The position ofthe ICJ towards the application of the doctrine therefore meritsreconsideration.